Ex parte Josefsson

Board of Patent Appeals and Interferences

Mar 17, 1998

08467869 (B.P.A.I. Mar. 17, 1998)

Application for patent filed June 6, 1995. According to1
appellant, the application is a continuation of Application
08/244,839, filed June 9, 1994, abandoned, which is a National
stage application under 35 U.S.C. § 371 of PCT/SE92/00891,
filed December 22, 1992.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 29
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte PERCY JOSEFSSON
_____________
Appeal No. 97-1037
Application 08/467,8691
______________
HEARD: March 3, 1998
_______________
Before COHEN, PATE, and NASE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
Appeal No. 97-1037
Application 08/467,869
We shall refer to this reference as the British document,2
as did the examiner.
2
DECISION ON APPEAL
This is an appeal from the final rejection of claims 1
through 5, all of the claims in the application.
Appellant’s invention pertains to a vibration-and-noise
damping insert for the brakes of automotive vehicles and to a
method of producing a material web for the manufacture of vehicle
brake vibration-and-sound damping inserts. An understanding of
the invention can be derived from a reading of exemplary claims 1
and 4, copies of which appear in the appendix to appellant’s main
brief (Paper No. 20).
As evidence of obviousness, the examiner has applied
the documents listed below:
Niwa et al. (Niwa) 5,063,098 Nov. 5, 1991
Fogg et al. (Fogg) 1,550,616 Aug. 15, 1979
(Great Britain)2
Josefsson WO 91/13758 Sep. 19, 1991
(PCT document)
Appeal No. 97-1037
Application 08/467,869
3
The following rejections are before us for review.
Claims 1 through 3, and 5 stand rejected under
35 U.S.C. § 103 as being unpatentable over Niwa in view of the
British document.
Claims 1 through 5 stand rejected under 35 U.S.C. § 103
as being unpatentable over the PCT document in view of Niwa.
The full text of the examiner's rejections and response
to the argument presented by appellant appears in the answer
(Paper No. 21), while the complete statement of appellant’s
argument can be found in the main and reply briefs (Paper
Nos. 20, 22 and 25).
In the main brief (page 4), appellant indicates that
claims 1, 2, and 4 may be considered together, while claims 3
and 5 are not to be considered with claims 1, 2, and 4. Pursuant
to 37 CFR § 1.192(c)(7), we select claims 1 and 5 for review from
appellant’s respective groupings of claims. Accordingly, based
upon our selection of claims 1 and 5 and appellant’s stated claim
groupings, as to the rejection of claims 1 through 3 and 5,
Appeal No. 97-1037
Application 08/467,869
In our evaluation of the applied teachings, we have3
considered all of the disclosure of each teaching for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
claims 1 and 5 will be separately assessed and claims 2 and 3
stand or fall with claim 1 and claim 5, respectively, and as to
the rejection of claims 1 through 5, claims 1 and 5 will be
separately assessed and claims 2, 3 and claim 4 stand or fall
with claims 1 and 5, respectively.
OPINION
In reaching our conclusion on the obviousness issues
raised in this appeal, this panel of the board has carefully
considered appellant’s specification and claims, the applied
references, and the respective viewpoints of appellant and 3
the examiner. As a consequence of our review, we make the
determinations which follow.
Appeal No. 97-1037
Application 08/467,869
5
Initially, we note that an obviousness question cannot
be approached on the basis that an artisan having ordinary skill
would have known only what they read in references, because such
artisan must be presumed to know something about the art apart
from what the references disclose. See In re Jacoby, 309 F.2d
513, 516, 135 USPQ 317, 319 (CCPA 1962). Further, a conclusion
of obviousness may be made from common knowledge and common sense
of the person of ordinary skill in the art without any specific
hint or suggestion in a particular reference. See In re Bozek,
416 F.2d 1385, 1390, 163 USPQ 545, 549 (CCPA 1969).
With the above in mind, we appreciate from our reading
of appellant’s underlying specification (page 1) that, at the
time of the present invention, it was well known to effect a
vibration-and-sound damping insert by coating a rubber layer on
both sides of thin metal plates or strips. To solve the problem
of depressions being formed in the rubber layer facing the rod of
a hydraulic piston-cylinder unit, it was known to form the insert
as two thin steel plates bonded together by a layer of adhesive.
However, appellant points out that a drawback with this solution
Appeal No. 97-1037
Application 08/467,869
We perceive from this prior art disclosure that, as to the4
known insert with a rubber layer on both sides of a thin metal
plate, the utilized rubber layers of undisclosed relative
thickness were not destroyed when subjected to high pressure and
temperature in the disc brake system environment. As disclosed,
only the layer facing the rod of the hydraulic piston-cylinder
unit was adversely effected by the formation of depressions
therein. With respect to the known insert with an adhesive layer
between thin steel plates, we are not informed as to the relative
thickness of the adhesive layer.
Giving the claim language its broadest reasonable inter-5
pretation, consistent with the underlying specification, we
understand the recitation of the relative term “thinner,” in
the context of the claim, to broadly denote any damping layer
thickness less than the respective thickness of each metal plate.
6
was that the adhesive layer was destroyed when subjected to high
pressure and high temperature, causing the steel strips to
separate from one another.4
The rejection of claims 1 through 3, and 5
We affirm the rejection of these claims under 35 U.S.C.
§ 103.
Claim 1 is drawn to a vibration-and-noise damping
insert for the brakes of automotive vehicles comprising,
two metal plates and a damping layer enclosed
there between, wherein said damping layer is
thinner than each of said metal plates and is
comprised of a rubber layer which is a sheet
that is formed and subsequently vulcanized to
the two metal plates.5
Appeal No. 97-1037
Application 08/467,869
7
We turn now to the applied prior art.
Niwa informs us (column 1, lines 14 through 62, and
column 3, lines 9 through 15, and lines 54 through 63) that,
prior to appellant’s invention, it was known to effect a con-
straint type of vibration damper (Figures 2 and 23), effective as
the noise-preventing-material for disc brakes (column 7, lines 54
through 56). As shown in Figure 2, this form of damper can
comprise metal sheets 1 and 4 with a rubber layer 2 and resin
film (hot melt adhesive) 3 therebetween (Figure 2), while as
depicted in Figure 23 this form of damper can also comprise a
viscoelastic polymeric layer 2 bonded between two steel sheets 1.
The patentee reveals that a constraint type of damper is effec-
tive with a thin viscoelastic layer (column 1, lines 33 and 34).
More specifically, it is clear to us from Niwa’s teaching of
relative thicknesses (column 5, lines 33 through 39) that even
considering the maximum values of the disclosed thickness ranges,
the intermediate layer 2 (0.5 mm) and film 3 (0.1 mm) are taught
to be thinner (0.6 mm total) than each metal sheet 1, 4 (1.0 mm).
Appeal No. 97-1037
Application 08/467,869
The test for obviousness is what the combined teachings of6
references would have suggested to one of ordinary skill in the
art. See In re Young, 927 F.2d 588, 591, 18 USPQ2d 1089, 1091
(Fed. Cir. 1991) and In re Keller, 642 F.2d 413, 425, 208 USPQ
871, 881 (CCPA 1981).
8
The minimum values similarly call for an intermediate layer 2 and
film 3 thinner than each metal sheet. Of particular interest, is
the clear indication by Niwa (column 6, lines 40 through 45) of a
conventional form of damper wherein a sheet form of rubber is
interposed between steel sheets with the use of polyethylene
resin.
The British document (page 2, lines 13 through 26)
teaches a vibration damping device having rubber material
vulcanized to and sandwiched between metal plates. The document
expressly indicates (page 2, lines 27 through 31) that
the thickness of the mixture of rubber and
extract between the two relatively rigid
structures may be determined by the man
skilled in the art depending on the par-
ticular purpose for which the device is to be
used, and the known principles governing the
constructions of vibration damping devices of
this type.
In applying the test for obviousness, we reach the6
conclusion that it would have been obvious to one having ordinary
Appeal No. 97-1037
Application 08/467,869
9
skill in the art, from a combined assessment of the applied prior
art, to vulcanize a rubber layer between the metal plates of a
constraint type of vibration damper such as that taught by Niwa
(Figure 2). From our perspective, the incentive on the part of
one having ordinary skill in the art for making this modification
would have simply been to obtain the expected benefit of this
alternative practice of rubber vulcanization, a practice well
known in the vibration damping device art, as revealed by the
British document. As explained above, Niwa would have been
suggestive of a thinner damping layer, as claimed. As to the
recitation in claim 1 of the rubber layer being a “sheet that is
formed and subsequently” vulcanized, we note that the patent-
ability of an article does not depend on its method of produc-
tion. See In re Thorpe, 777 F.2d 695, 697, 227 USPQ 964, 966
(Fed. Cir. 1985). While in the final article (insert), as
claimed, it does not appear that the initial sheet form of the
rubber layer would be discernible, we do recognize that the Niwa
disclosure is nevertheless suggestive of applying rubber in sheet
form, as pointed out, supra. For these reasons, we affirm the
Appeal No. 97-1037
Application 08/467,869
10
rejection of claim 1 and the rejection of claim 2, since the
latter claim stands or falls with claim 1.
Claim 5 adds the further limitations to claim 1 of the
two plates having “essentially the same thickness” and the thick-
ness of the rubber layer being “about one-third” of the thickness
of each plate.
It is the opinion of this panel of the board that the
applied references would have been suggestive of plates of the
same thickness, and based upon these prior art teachings,
considered as a whole, it is readily apparent to us that the
selection of a particular thickness for the rubber layer would
have been an obvious matter for one having ordinary skill in this
art. Rubber layer thickness clearly appears to us to be a result
effective variable in this art. Accordingly, the claimed value
of “about one-third” is seen to be simply a working or optimum
value obtainable through routine experimentation. See In re
Boesch, 617 F.2d 272, 276, 205 USPQ 215, 219 (CCPA 1980) and
In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955).
Appellant’s specification buttresses this viewpoint, since the
rubber layer thickness value of “about one-third” is not indi-
Appeal No. 97-1037
Application 08/467,869
11
cated to solve a particular problem and/or yield any unexpected
or unexpectedly good result. Therefore, we affirm the rejection
of claim 5, and the rejection of claim 3 which stands or falls
therewith.

The argument advanced by appellant in the main and
reply briefs (Paper Nos. 20, 22, and 25) has not persuaded us
that the content of claims 1 and 5 is patentable under 35 U.S.C.
§ 103. Contrary to the view taken by appellant (main brief,
page 9), we determined above that the combined teachings would
have been suggestive of the claimed invention. While appellant
faults the references for not suggesting the “importance” of
having a thin damping layer (main brief, pages 9 and 11), we note
that the brief does not refer us to any portion of the present
specification that expressly sets forth the importance of having
a thin damping layer, and we can find none. While appellant
views the teaching of a thinner damping layer by Niwa as a mere
happenstance (main brief, page 10), this argument nevertheless
cannot detract from Niwa’s explicit teaching (column 5, lines 36
through 39) of a thinner damping layer. Appellant’s assertion
that Niwa teaches away from a thinner damping layer (main brief,
page 11) is clearly based upon a misapprehension of the docu-
Appeal No. 97-1037
Application 08/467,869
12
ment’s disclosure. The passage quoted from the Niwa reference
(main brief, page 11), read in the context of the overall patent,
simply indicates that when a greater damping capacity is desired
the single thin damping layer of Figure 2 should not be increased
in thickness, but additional thin laminated layers of rubber
should be added, for example, as shown in Figure 1. Thus, when
the patent to Niwa is fairly understood, it does not teach away
from the present invention. As to appellant’s argument relative
to the recitation of the sheet form of the rubber layer (main
brief, page 12), we refer to our earlier commentary on this
matter. Appellant asserts that the British document does not
cure the deficiencies of the primary reference Niwa (main brief,
pages 13 and 14). We, on the other hand, find that the teaching
of the British reference reveals that more than a decade before
appellant’s invention those practicing the vibration damping art
were vulcanizing rubber between steel sheets. Not only that, but
the British document also supports our earlier stated position
regarding the selection of a damping layer thickness by expressly
instructing that the thickness of the rubber may be determined by
the man skilled in the art based upon the particular purpose of
the device and known principles governing vibration damping
devices of that type. As should be evident from our analysis,
Appeal No. 97-1037
Application 08/467,869
13
supra, we are not in accord with the argued view (pages 4 and 5
of the reply briefs; Paper Nos. 22 and 25) to the effect that
the rejection is based upon appellant’s disclosure and an imper-
missible hindsight reconstruction of random prior art facts in
light thereof. We earlier explained that the prior art itself
would have been suggestive of the claimed invention to one having
ordinary skill. Further, as articulated, supra, each of Niwa and
the British patent are seen as suggesting to those versed in the
art the alternatives of a damping layer of rubber and hot-melt
adhesive resin film and a damping layer of vulcanized rubber.
The rejection of claims 1 through 5
We reverse the rejection of these claims under
35 U.S.C. § 103.
As earlier indicated, the insert of claim 1 on appeal
requires two metal plates and a damping layer enclosed there-
between, wherein said damping layer is thinner than each of said
metal plates and is comprised of a rubber layer which is a sheet
that is formed and subsequently vulcanized to the two metal
plates.
Appeal No. 97-1037
Application 08/467,869
14
The PCT document discloses a method of making a web
for manufacturing gaskets, such as vibration and noise damping
spacers for vehicle brakes. As disclosed in this document,
whether with the prior art method of Figures 1 and 2, or with the
invention method of Figures 3 and 4, the resulting spacer would
be constituted as a body of sheet metal coated with a vulcanized
rubber layer on at least one side thereof. Thus, this document
teaches the type of spacer (external rubber layer) indicated by
appellant (specification, page 1) to pose the problem that the
present invention seeks to overcome.
Niwa as previously described teaches a constraint type
of vibration damper (Figures 2 and 23), effective as the noise-
preventing-material for disc brakes. As shown in Figure 2, this
form of damper can comprise metal sheets 1 and 4 with a rubber
layer 2 and resin film (hot melt adhesive) 3 therebetween
(Figure 2), or as depicted in Figure 23 this form of damper can
comprise a viscoelastic polymeric layer 2 bonded between two
steel sheets 1. As portrayed in Figure 22 of Niwa, a known non-
constraint type of vibration damper includes a thin steel sheet
with rubber bonded to both sides thereof (column 1, lines 15
through 20).
Appeal No. 97-1037
Application 08/467,869
15
Considering these two disclosures together, it is clear
to us that the focus of the PCT document is the formation of a
non-constraint type of vibration and noise spacer (at least one
external vulcanized rubber layer), while Niwa is particularly
concerned with a constraint type of vibration damper. As such,
we perceive that one of ordinary skill in the art would consider
each of these documents to reveal separate alternative forms of
vibration devices clearly effected by distinctly different
methods of manufacturing, as disclosed. With this latter under-
standing, we cannot fairly say that the examiner’s proposed
significant reworking of the spacer of the PCT document would
have been obvious to one having ordinary skill in the art on the
basis of these applied teachings. Accordingly, we reverse the
rejection of claim 1, and the rejection of claims 2 and 4 which
stand or fall with claim 1. The rejection of dependent claims 3
and 5 on the same prior art is likewise reversed in light of our
reversal of the rejection of independent claim 1.
In summary, this panel of the board has:
Appeal No. 97-1037
Application 08/467,869
16
affirmed the rejection of claims 1 through 3, and 5
under 35 U.S.C. § 103 as being unpatentable over Niwa in view of
the British document, and
reversed the rejection of claims 1 through 5 under 35
U.S.C. § 103 as being unpatentable over the PCT document in view
of Niwa.
The decision of the examiner is affirmed-in-part.
No time period for taking any subsequent action in con-
nection with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED-IN-PART
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
Appeal No. 97-1037
Application 08/467,869
17
)
) BOARD OF PATENT
WILLIAM F. PATE III ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 97-1037
Application 08/467,869
18
Robert G. Mukai
Burns Doane Swecker and Mathis
P.O. Box 1404
Alexandria, VA 22314-3187